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SUNY Buffalo Law School
Simpson, Robert P.

Introduction to Patent Practice – Simpson – Spring 2017


USPTO – Alexandria, VA


non-obvious to one having ordinary skill in the art to which the invention pertains at the time the invention was made. 35 U.S.C. 103


35 USC 101: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title


35 USC 100 defines invention as “invention”
35 USC 101 – interpret invention as “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”

This person may obtain a patent

Two parts to an invention:

1) concept
2) Reduction to Practice

Accidental invention – the popsicle

Frank Epperson
Mixed soda powder & water, left mixture on porch overnight with stirring stick in, temperature dropped & it froze

First thing you have to do as a patent attorney – understand the invention
Patents last 20 years from the date of file
Right to exclude others from:


CLASS 2 – The Patent Profession

Open question of whether NY of federal rules of conduct apply to patent agents

Rule 8.5 b of NY says only one rule applies to patent agents (which applies is open question)

Patent Prosecution – process of negotiating with the USPTO

Plant – asexually reproduced
Design patent – protect the way something looks

Lasts 15 years from the date of issue

Utility patent – protect use/function 3&1/2, 7&1/2 and 11&1/2 year maintenance fees after issue

Parts of a patent

Field of the Invention
Background of the Invention
Summary of the Invention
Brief Description of the Drawings
Detailed Description of the Invention

First job is to understand the invention
37 CFR 1.56 – duty of disclosure; must disclose to PTO anything you’re aware of that’s material to patentability

Disclose by filing an IDS statement

Must file within 3 months of filing application or by mailing date of first office action
Whichever occurs later

Continuation Application

Patent application for the same invention described in an earlier filed parent application
Must be filed while earlier application is still pending
Must have at least one common inventor
No new matter allowed
Specification is the same, but claims can be different in scope
Must include specific reference to earlier filed application
No time limit for filing continuation, as long as earlier case is still pending
No limit to the number of continuations that can be filed
Normally filed for purpose of obtaining broader or different claim coverage when Applicant is out of time to obtain such coverage in a parent case (i.e., Applicant has received Final Rejection)

Continuation In-Part (CIP Application)

A Continuation-in-Part application includes new subject matter not included in earlier filed parent application
Often used to supplement description to enable claims that are patentable over prior art cited during prosecution of parent application, or to cover an improvement of the parent invention
invention that comprises “new matter” in C-I-P is subject to requirement of 35 U.S.C. 102(b) – public use, publication and on sale bars

Statutory basis for Continuing Applications

Note that the statutory bases for continuing applications are Sections 120 and 121.
Note that claims in both Continuation and Continuation-in-Part applications that are supported by 35 U.S.C. 112 are entitled to effective filing date of earlier filed parent application

Divisional Application – if you include two inventions, you’ll get a restriction

A divisional application is a second application f

examination proceedings and inter partes reexamination proceedings.


Proceeding to have a patent reissued with either narrower or broader claims
An application for a broadened reissue can only be filed within two years after issuance of the original patent.
In applying for a broadened reissue, need to consider doctrine of intervening rights

Lexicographer – when things are so new and you can’t define them you make up a word

Sometimes necessary to describe novel invention.
Might cement interpretation of claims re: Markman.
But – double-edged sword – might unduly limit scope of claims through narrow interpretation.

Markman Hearing – deciding what claim means

Used in every patent infringement case
Each party submits “claim chart” and their proposed version of claim interpretation for court consideration
The form and substance of the submission is dictated by local court rules
The court considers the respective submissions and instructs the jury as to what the claims mean, etc.

Doctrine of Equivalents

“performs substantially the same function in substantially the same way to obtain the same result”


All patent applications are secret for 18 months

If you want to keep the right to obtain a foreign patent you must publish, otherwise you forego foreign rights

Prosecution History Estoppel

Patentee cannot regain in litigation what he has given up in prosecution.
There are a number of reasons why a patentee may have narrowed claims during prosecution, some of which are not related to patentability.